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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Geoffrey, Inc. v. NOT THE USUAL
Case No. D2006-0882
1. The Parties
The Complainant is Geoffrey, Inc., United States of America, represented by Bryan Cave, LLP, United States of America.
The Respondent is NOT THE USUAL, Brett Wilkinson, Rootstown, Ohio, United States
2. The Domain Name and Registrar
The disputed domain names <pensareus.com> and <pensrus.com> are
registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2006. On July 12, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain names at issue. On July 13, 2006, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced July 18, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response August 7, 2006. The Response was filed with the Center August 7, 2006.
The Center appointed as panelists Jeffrey Samuels,
Eric Guam Guam and Lynda Zadra-Symes. The Panel finds that it was properly constituted.
Each member of the Panel has submitted the Statement of Acceptance and Declaration
of Impartiality and Independence, as required by the Center to ensure compliance
with the Rules, paragraph 7.
4. Factual Background
Complainant is the owner of a family of “R” US marks, including TOYS “R” US, BABIES “R” US, BIKES “R” US, PARTIES “R” US, PETS “R” US, SPORTS “R” US. Complainant owns hundreds of trademark and service mark registrations worldwide for its “R” US Family of Marks, including sixty three (63) United States registrations for marks containing “R” US” (collectively the “R” US Family of Marks”). Of these sixty three United States registrations, Complainant is the owner of two U.S. Trademark and Service Mark Registrations for the “R” US mark, Registration No. 2,282,394 for use in connection with retail department store services and Registration No. 2,442,370 for use in connection with gift cards.
Complainant is the listed registrant for two hundred and fifty (250) domain names incorporating “R” US and “ARE US.” Complainant’s website “toysrus.com” is one of America’s largest online retainers, based on retail sales volume. Complainant also relies upon its recent domain name registrations for <pensrus.net>, <pensrus.org>, <pensrus.info>, <pensrus.net>, <pensrus.org>, <pensrus.info> and <pensrus.biz>.
Complainant began using its “R” US Family of Marks at least as early as 1960 and today owns and operates over 1,200 retail stores throughout the world offering toys, children’s clothing, bicycles, party favors, pet toys, sporting goods and other products, including pens, under the “R” US Family of Marks.
Respondent is a company providing web design, web marketing and website hosting services to a limited group of small business customers. PENSRUS is the name of a web-based business owned by Mr. Henry Morgan, Respondent’s client. Respondent registered the domain names as a service for PENSRUS. Mr. Morgan established his business under the PENSRUS name in approximately September 2001. The business consists of selling pens that have been customized with a customer’s promotional message or logo. For many years prior to 2001, Mr. Morgan had used the toll free telephone number 1-800 PENSRUS in connection with the business of manufacturing and selling pens. PENSRUS has over 40,000 customers and 11 staff.
Pens and other promotional products sold by PENSRUS are purchased in minimum quantities of 150 to 500 units. The customer of PENSRUS must provide specific customization information, such as custom imprinting or engraving, before ordering. Products from PENSRUS are ordered in volume and customized per the instructions of the customer. Average orders exceed 150 units and $260.00. Most products are bulk packaged (from 100 – 500 per box). All PENSRUS products are promotional products and not retail products. PENSRUS has over 40,000 customers who purchase products from PENSRUS to use as marketing tools for their businesses. The remaining customers purchase promotional products for events like weddings, bar mitzvahs, reunions and school events as commemorative items.
PENSRUS filed a U.S. Service Mark application, Serial
No. 76/333,783, on November 5, 2001, for use in connection with online retail
store services and mail order services featuring pens. The application claims
a date of first use in commerce of October 22, 2001. The Examiner in the United
States Patent and Trademark Office allowed this application and it proceeded
to publication. Complainant opposed this application on November 7, 2003.
5. Parties’ Contentions
Complainant contends that:
Complainant’s “R” US Family of Marks is one of the most famous families of marks known to consumers.
Complainant and its related companies have successfully litigated infringement, dilution and anti-cybersquatting claims against third parties using the “R” US designation in their marks and/or domain names.
Complainant contends that Respondent’s adoption, registration and use of the domain names is confusingly similar to Complainant’s “R” US Family of Marks in which Complainant has well-established prior rights and that Respondent’s registration and use of the domain names is for the bad faith purpose of (i) knowingly confusing the public, (ii) diluting and tarnishing Complainant’s “R” US Family of Marks and (iii) diverting prospective purchasers from Complainant’s websites to Respondent’s website and preventing Complainant from reflecting its marks in corresponding <.com> domain names.
Respondent contends that:
Customers who search on the Internet for products sold by Complainant are not the same types of customers who search for the type of products offered by PENSRUS. Respondent contends that its client, Mr. Henry Morgan and/or his PENSRUS business has at no time used keyword advertising to attempt to divert customers from the Complainant’s sites. Respondent asserts that it would not make business or financial sense for the PENSRUS business to try and attract, much less divert, Complainant’s customers.
PENSRUS has never advertised in a way that would place the Complainant and PENSRUS in competing forums or markets.
The domain names are not trading off the goodwill of Complainant, and there has not been confusion or diversion of customers to the Respondent’s sites as the parties do not share a customer base. Respondent submitted Google search results showing that numerous businesses apparently not affiliated with Complainant use the designation “r us” in their business names and/or domain names, including <clocksrus.com>, <bottlesrus.com>, <calculatorsrus.com>, <accountantsrus.com.au> and <horseshowsrus.ca> and <scrapbookingsupplesrus.com>.
Respondent and/or PENSRUS have never attempted to
sell the domain names to the Complainant. Respondent has never engaged in a
pattern of conduct showing bad faith. The domain names were not registered primarily
for the purpose of disrupting the business of a competitor. The Complainant
is not a competitor of PENSRUS, and PENSRUS sells into a vastly different marketplace
with more sophisticated customers. Because of the divergent marketplaces, it
would be of no material benefit for Respondent or PENSRUS to create confusion
or attract Complainant’s potential customers.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the “Policy”) have been satisfied:
(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and used in bad faith.
A. Identical or Confusingly Similar
Complainant did not submit any evidence that it is the owner of a trademark or service mark registration for PENSRUS or PENSAREUS. Rather, Complainant relies on its “R” US Family of Marks, including TOYS R US, KIDS R US and BABIES R US and its two U.S. federal registrations for “R” US for use in connection with retail department store services and gift cards. While Complainant has recently obtained domain name registrations for <pensrus.net>, <pensrus.org>, <pensrus.info>, <pensrus.net>, <pensrus.org>, <pensrus.info> and <pensrus.biz>, Complainant has not submitted any evidence that it uses those terms as trademarks. Moreover, Complainant obtained these domain name registrations after it became aware of Respondent’s registration of the domain names, and Respondent’s client’s use and application for registration of the PENSRUS mark.
Nevertheless, applying the limited confusing similarity analysis of a UDRP proceeding, which requires a straight visual comparison between the Complainant’s mark and the domain name, with no consideration of marketplace confusion factors, the domain names include Complainant’s federally registered “R” US mark in its entirety, with the addition of the generic word “PENS”. Thus, the Panel finds that, for the purpose of this UDRP proceeding only, the domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c)(i) of the Policy provides that a use is legitimate if, prior to commencement of the dispute, Respondent used the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services.
Unlike the facts of prior UDRP complaints filed by Complainant, the Respondent’s client, PENSRUS, is not a cybersquatter, but has a well-established business that has been in effect since September 2001. PENSRUS has over 40,000 customers and 11 staff. PENSRUS filed an application for registration of its mark with the U.S. Patent and Trademark Office in November 2001. The Examiner in the USPTO allowed this application, and the application was published for opposition. The facts indicate that Complainant has been well aware of the PENSRUS business since at least November 2003, when it filed an opposition against the PENSRUS trademark application.
While the numerous earlier decisions relied upon by Complainant have found confusing similarity between Complainant’s “R” US Family of Marks and various uses of marks or domain names including the term “R” US, most of them related to domain names that incorporated one of Complainant’s trademarks in their entirety, pertained to goods or services closely related to those of Complainant and/or were obvious examples of “typosquatting.” Other decisions involved infringement and/or dilution of Complainant’s trademarks by pornographic websites. Moreover, in the U.S. court cases relied on by Complainant, the court had the opportunity to consider evidence of use of the parties’ marks in the marketplace to determine the existence of a likelihood of confusion among consumers.
UDRP proceedings are for clear cases of cybersquatting, not for resolving trademark
infringement and/or trademark dilution disputes. See Metabolife International
v. Spectrum Labs, WIPO Case No. D2000-0509,
fn.1; ICANN, Second Staff Report on Implementation Documents for Uniform Dispute
Resolution Policy, Section 4.1(c) (October 24, 1999), at http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm)
(“The adopted policy establishes a streamlined, inexpensive administrative
dispute-resolution procedure intended only for the relatively narrow class of
cases of “abusive registrations.” . . . “The policy relegates
all “legitimate” disputes . . . to the courts.”).
The Panel finds that the facts of this dispute are more appropriate for the courts rather than the streamlined dispute-resolution procedure intended for the narrow class of cases involving cybersquatters.
Accordingly, the Panel finds that Complainant has failed to establish this element.
C. Registered and Used in Bad Faith
In light of the above finding that Complainant has failed to establish that
Respondent has no rights to or legitimate interest in the domain name, it is
unnecessary for the Panel to reach this third factor.
For all the foregoing reasons, the Complaint is denied.
Lynda J. Zadra-Symes
Jeffrey M. Samuels
R. Eric Gaum
Date: October 18, 2006